DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/11/2026 has been entered.
Response to Amendment
The amendment filed 5/11/2026 has been entered. Claims 1-5, 8-12, 15, and 20 remain pending. Claims 1 and 8 have been amended. Claims 16-19 have been cancelled. Claims 21-28 have been added.
Response to Arguments
Applicant's arguments, see page 27-28, filed 5/11/2026, with respect to claims 1, 4-5, 15, and 18-19 have been fully considered but they are not persuasive.
Applicant argues because the co-pending application has a later effective filing date than the Instant Application, and the only remaining rejection is the double patenting rejection, then per MPEP 804, the examiner should withdraw the rejection in the application with the earliest effective filing date. Examiner notes, the double patenting rejection is not the only remaining rejection for the Instant Application, therefore the rejection is maintained.
Applicant’s arguments, see page 28-29, filed 5/11/2026, with respect to the rejection of claims 1-5, 8-12, and 15-20 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of Nagao (US 200923551) in view of Yoshizawa (JP 2016133795).
Applicant argues the formula (1) in Mizushima is too broad and fails to provide specific motivation to select one of the claimed diol units (B3 or B5-B10), and argues the cited specific example Formula X does not meet the claimed limitation of diol unit B10 as previously indicated. Examiner agrees Formula X does not meet the limitations of diol B10. However, while general formula (1) is broad, the linking group X1 is the main difference between the diol section and the claimed diol structures of the Instant Application. Mizushima specifically includes “a single bond” in the definition of X1 ([0020]), which one of skill in the art would significantly overlap with formula (B7) of Instant claims 1 and 8.
However, in the interest of compact prosecution Nagao will now be relied upon to teach the base structure of the photoreceptor, with Yoshizawa brought in to teach specific examples of the monomers used in the polyester, including a polyester comprising both a diol structure meeting the claimed unit (B9) and a dicarboxylic acid meeting the claimed unit (A2), to specifically address the newly added claims.
Applicant's arguments, see page 29-32, filed 5/11/2026 have been fully considered but they are not persuasive.
Applicant argues unexpectedly superior results, referencing Examples S1, S29, S57, S85, and S105, noting the examples all use polycarbonate resin PC1 and 50mass% of their respective polyesters (PE1, PE2, PE3, PE4, and PE5, which include diol unit’s corresponding to formulae (B3), (B6), (B7), (B9) and/or (B10), in comparison to Example S125, which comprises polycarbonate resin PC1 and polyester 50 mass% of polyester resin PE6, which uses a diol unit which corresponds to formula (B11). Applicant notes the exemplified S1, S29, S57, S85, and S105 all have a number of black spots generated of 4352 or lower, while S125 has a value of 4554. Similarly Applicant references Examples T1, T5, T9, T13, and T17 (single layer photoreceptors, with a similar resin makeup as above), in comparison to T21, again using PE6 with diol unit (B11), again showing a higher number of black spots generated.
Examiner disagrees with the argument, because the claims are not commensurate in scope with the Examples. The independent claims do not indicate the mass% of polyester in the binder resin, several of the claimed diol units are not in any of the Examples or Comparative Examples, and of the diol units which are in the examples, only a single example of each is used. Furthermore, only 3 specific dicarboxylic acids in the Examples, the independent claims do not mention them. Similarly, the Examples only teach 4 possible polycarbonate resins, using 4 specific constitutional units which all fall in only 3 of the 8 claimed general formula.
Also, while Example S125 has a generation of black spots value higher than 4352, so does Example S58. Example S58 meets all the limitations of claim 1, and does not use polyester PE6 with a diol unit of (B11), but its black spot generation value is 5406. Furthermore, Example S110 meets the limitations of claim 1 and includes polyester in an amount of 50 mass%, yet has black spot generation value of 4502.
As discussed in the Interview dated 4/29/2026, the claims would need to be amended to be commensurate in scope with the specific examples. This would require significant amendment due to the broad nature of the claims as currently written.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4-5, 15, and 18-19 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, and 11 of copending Application No. 19/200,690 in view of Ngao (US 20090232551).
Regarding claims 1 and 4-5, the ‘690 application claims An electrophotographic photoreceptor comprising:
a conductive substrate; and
a photosensitive layer disposed on the conductive substrate, wherein an outermost surface layer contains a charge transport material, a polyarylate resin having at least one dicarboxylic acid unit selected from the group consisting of a dicarboxylic acid unit (A2) represented by Formula (A2), a dicarboxylic acid unit (A3) represented by Formula (A3), a dicarboxylic acid unit (A4) represented by Formula (A4), and a dicarboxylic acid unit (A5) represented by Formula (A5) and a diol unit represented by Formula (B), and a polycarbonate resin, and
a weight-average molecular weight MwA of the polyarylate resin and a weight-average molecular weight MwB of the polycarbonate resin satisfy -14 ≤ 100 x (MwA - MwB)/MwA ≤ 14,
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in Formula (A2), n201 and n202 are each independently an integer of 0 or greater and 4 or less, and n201 pieces of Ra201's and n202 pieces of Ra202's are each independently an alkyl group having 1 or more and 10 or less carbon atoms, an aryl group having 6 or more and 12 or less carbon atoms, or an alkoxy group having 1 or more and 6 or less carbon atoms,
in Formula (A3), n301 and n302 are each independently an integer of 0 or greater and 4 or less, and n301 pieces of Ra301's and n302 pieces of Ra302's are each independently an alkyl group having 1 or more and 10 or less carbon atoms, an aryl group having 6 or more and 12 or less carbon atoms, or an alkoxy group having 1 or more and 6 or less carbon atoms,
in Formula (A4), n401 is an integer of 0 or greater and 6 or less, and n401 pieces of Ra401's are each independently an alkyl group having 1 or more and 10 or less carbon atoms, an aryl group having 6 or more and 12 or less carbon atoms, or an alkoxy group having 1 or more and 6 or less carbon atoms,
in Formula (A5), n501, N502, and n503 are each independently an integer of 0 or greater and 4 or less, and n501 pieces of Ra501's, n502 pieces of Ra502's, and n503 pieces of Ra503's are each independently an alkyl group having 1 or more and 10 or less carbon atoms, an aryl group having 6 or more and 12 or less carbon atoms, or an alkoxy group having 1 or more and 6 or less carbon atoms,
in Formula (B), ArB1 and ArB2 are each independently an aromatic ring which may have a substituent, LB is a single bond, an oxygen atom, a sulfur atom, or -C(Rb1)(Rb2)-, and nB1 is 0,1, or 2, where Rb1 and Rb2 are each independently a hydrogen atom, an alkyl group having 1 or more and 20 or less carbon atoms, an aryl group having 6 or more and 12 or less carbon atoms, or an aralkyl group having 7 or more and 20 or less carbon atoms, and Rb1 and Rb2 may be bonded to each other to form a cyclic alkyl group. (Claim 1)
The electrophotographic photoreceptor according to claim 1,
wherein the diol unit represented by Formula (B) includes at least one selected from the group consisting of a diol unit (B1) represented by Formula (B1), a diol unit (B2) represented by Formula (B2), a diol unit (B3) represented by Formula (B3), a diol unit (B4) represented by Formula (B4), a diol unit (B5) represented by Formula (B5), a diol unit (B6) represented by Formula (B6), a diol unit (B7) represented by Formula (B7), and a diol unit (B8)
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in Formula (B1), Rb101 is a branched alkyl group having 4 or more and 20 or less carbon atoms, Rb201 is a hydrogen atom or an alkyl group having 1 or more and 3 or less carbon atoms, and Rb401, Rb501, Rb801, and Rb901 are each independently a hydrogen atom, an alkyl group having I or more and 4 or less carbon atoms, an alkoxy group having I or more and 6 or less carbon atoms, or a halogen atom,
in Formula (B2), Rb102 is a linear alkyl group having 4 or more and 20 or less carbon atoms, Rb202 is a hydrogen atom or an alkyl group having 1 or more and 3 or less carbon atoms, and Rb402, Rb502, Rb802, and Rb902 are each independently a hydrogen atom, an alkyl group having 1 or more and 4 or less carbon atoms, an alkoxy group having 1 or more and 6 or less carbon atoms, or a halogen atom,
in Formula (B3), Rb113 and Rb213 are each independently a hydrogen atom, a linear alkyl group having 1or more and 3 or less carbon atoms, an alkoxy group having 1 or more and 4 or less carbon atoms, or a halogen atom, d is an integer of 7 or greater and 15 or less, and Rb403, Rb505, Rb803 and Rb903 are each independently a hydrogen atom, an alkyl group having 1 or more and 4 or less carbon atoms, an alkoxy group having 1 or more and 6 or less carbon atoms, or a halogen atom,
in Formula (B4), Rb104 and Rb204 are each independently a hydrogen atom or an alkyl group having 1 or more and 3 or less carbon atoms, and Rb404, Rb504, Rb804, and Rb904 are each independently a hydrogen atom, an alkyl group having 1 or more and 4 or less carbon atoms, an alkoxy group having 1 or more and 6 or less carbon atoms, or a halogen atom,
in Formula (B5), Ar105 is an aryl group having 6 or more and 12 or less carbon atoms or an aralkyl group having 7 or more and 20 or less carbon atoms, Rb205 is a hydrogen atom or an alkyl group having lor more and 3 or less carbon atoms, and Rb405, Rb505, Rb805, and Rb905 are each independently a hydrogen atom, an alkyl group having 1or more and 4 or less carbon atoms, an alkoxy group having 1or more and 6 or less carbon atoms, or a halogen atom,
in Formula (B6), Rb116 and Rb216 are each independently a hydrogen atom, a linear alkyl group having 1 or more and 3 or less carbon atoms, an alkoxy group having 1 or more and 4 or less carbon atoms, or a halogen atom, e is an integer of 4 or greater and 6 or less, and Rb406, Rb506, Rb806, and Rb906 are each independently a hydrogen atom, an alkyl group having 1 or more and 4 or less carbon atoms, an alkoxy group having 1 or more and 6 or less carbon atoms, or a halogen atom,
in Formula (B7), Rb407, Rb507, Rb807, and Rb907 are each independently a hydrogen atom, an alkyl group having 1 or more and 4 or less carbon atoms, an alkoxy group having 1 or more and 6 or less carbon atoms, or a halogen atom,
in Formula (B8), Rb408, Rb508, Rb808, and Rb908 are each independently a hydrogen atom, an alkyl group having 1 or more and 4 or less carbon atoms, an alkoxy group having 1 or more and 6 or less carbon atoms, or a halogen atom. (Claim 4)
However, the ‘690 application does not claim a polycarbonate resin meeting formula (C), or (Cb1)-(Cb8).
Nagao teaches a photoreceptor having excellent abrasion resistance, using a combination of a polyester resin and another resin, preferably a polycarbonate ([0012]-[0014], [0021]). Nagao further teaches the polycarbonate resin uses a structural unit derived from a bifunctional phenol selected from a list including several which meet the limitations of Formula (C) in claim 1, with 2,2-bis-(4-hydroxyphenyl)propane, 1,1-bis-(-4-hydroxyphenyl)cyclopentane, 1,1-bis-(-4-hydroxyphenyl)cyclohexane, 2,2-bis-(-4-hydroxy-3-methylphenyl)propane, and 1,1-bis-(-4-hydroxyphenyl)phenylethane as the preferred choices ([0332]-[0334]). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to use polycarbonate in the photoreceptor of the ‘690 application, using a bis(hydroxyphenyl) based structural unit, as taught by Nagao, to improve abrasion resistance.
Regarding claims 15 and 18-19, the ‘690 application further claims a process cartridge comprising:
The electrophotographic photoreceptor according to claim 4,
Wherein the process cartridge is attachable to and detachable from an image forming apparatus. (Claim 11)
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5, 8-12, 15, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nagao (US 20090232551).
Regarding claims 1-5, and 8-12, Nagao discloses an electrophotographic photosensitive member comprising a photosensitive layer on a conductive support. The photosensitive layer comprising a first resin, a polyester containing the structural unit of formula (1), and a second resin with Ar1 to Ar4 representing, each independently, an arylene group which may have a substituent, X1 representing a bivalent group, including a single bond, and X2 representing a bivalent group, including a single bond, with 3 or less atoms. The second resin comprises either a different polyester, or a polycarbonate, and at least one of the first and second resins comprising a structural unit represented by formula (3) ([0014], [0021]). The photosensitive layer further comprising a charge transport material ([0015]).
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Nagao further discloses the second resin is preferably a polycarbonate resin, which preferably comprises a repeating unit represented by formula (3’’), which meets the claimed unit (CB4) ([0022]-[0023], [0025]).
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Nagao further discloses general formula (1) broadly with several Markush groups of possible diol and dicarboxylic units which may be used to produce the polyester ([0075]-[0091], [0095]-[0096], [0102]). Nagao further discloses polyester resin z, produced using 2,2-bis(4-hydroxy-3-methylphenyl)propane, diphenylether-4,4’-dicarboxylic acid, terephthalic acid, and isophthalic acid ([0624]).
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Polyester resin Z therefore comprises a unit (B9) diol as well as 2 unit (A1) and a (A3) dicarboxylic acids.
Nagao further discloses the second resin (aka polycarbonate resin) is usually 1 weight% or more and 80 weight% or less of the total weight of the first and second resin ([0358]). In other words the mass proportion of the polyester in a total amount of polyester and polycarbonate is 20-99 mass%.
Nagao further discloses the electrophotographic photoreceptor comprise a monolayer type photosensitive layer comprising the resins, or a multi-layered or lamination type photosensitive layer, with a charge transport layer comprising the resins, as well as a charge generation layer ([0026], [0035], [0128]-[0129]).
Regarding claim 15, Nagao discloses all limitations as set forth above. Nagao further discloses a photoreceptor cartridge, using the electrophotographic photoreceptor, which can be taken out from the main body of the image forming apparatus, and a new cartridge can be attached ([0189]).
Regarding claim 20, Nagao discloses all limitations as set forth above. Nagao further discloses an image forming device comprising the electrophotographic photoreceptor, a charging part for charging the photoreceptor, an exposure part for exposing the photoreceptor to form an electrostatic latent image thereon, a developing part for developing the latent image with toner, and a transfer part for transferring the toner to a target ([0028], Fig 1, [0042]-[0085], [0185]-[0186]).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 21-28 are rejected under 35 U.S.C. 103 as being unpatentable over Nagao (US 20090232551) in view of Yoshizawa (JP 2016133795).
Regarding claims 21-25, Nagao discloses all limitations as set forth above. While Nagao broadly discloses a variety of possible diol units and dicarboxylic acid units which may be used in the polyester resin, no specific examples are discloses which use at least one of a diol represented by unit (B9) or (B10), and a dicarboxylic acid represented by unit (A2).
Yoshizawa teaches a specific polyester resin, which when incorporated into the photosensitive layer of an electrophotographic photoreceptor improves the mechanical properties, while having high solubility and coating stability in solvent when forming the photosensitive layer ([0007]). Yoshizawa teaches the polyester comprises a divalent carboxylic acid residue represented by formula (1), a second divalent carboxylic acid residue represented by formula (2), and a divalent phenol residue represented by formula (3) ([0008]-[0013]). Nagao further specifies the specific combination of monomer units balances flexibility and rigidity for improved abrasion resistance and electrical characteristics([0020]).
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Yoshizawa further teaches polyester resin (3), which comprises a (B9) type diol unit with both (A2) and (A3) dicarboxylic acid units ([0107])
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Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to use a polyester comprising a (B9) type diol, and both (A2) and (A3) type dicarboxylic acids into the toner of Nagao, as taught by Yoshizawa, to ensure a balance of flexibility and rigidity and electrical characteristics.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Takagi (JP 2008152128) teaches several specific polyester comprising combinations of diols and dicarboxylic acids meeting the limitations of claims 1-5 and 8-12, as well as both single and multilayer photoreceptors (page 7-10). Takagi further mentions the inclusion of another resin, which could be a polycarbonate, but does detail any specific examples ([0104]). However, Takagi does not specifically disclose inclusion of a dicarboxylic acid represented by formula (A2).
Ogaki (US 7875410) teaches several polyesters for electrophotographic photoreceptors including specific combinations of monomers which meet the limitations of claims 1-5 (Col 21 to Col 28). Ogaki further requires a polycarbonate resin meeting including examples meeting the claimed monomer unit structures (Col 31). However, Ogaki only discloses multi-layer type photosensitive layers, requires the inclusion of a siloxane based monomer unit in the polyester resin, and does not include any specific combinations of monomers meeting the requirements of the new claims, specifically no (A2) based dicarboxylic acids.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES COLLINS SULLIVAN IV whose telephone number is (571)272-2208. The examiner can normally be reached M-F 8-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.C.S./ Examiner, Art Unit 1737
/AMBER R ORLANDO/ Supervisory Patent Examiner, Art Unit 1731
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